In Thaddeus Davids Co. v. Davids Manufacturing Co., 233 U.S. 461, 34 S. Ct. 648, 652, 58 L. Ed. 1046, Ann. Cas. 1915B, 322, the Supreme Court very fully and carefully outlined exactly what rights the registrant of a trade-mark under the ten-year clause of the Act of 1905 acquires. That clause removed, in certain cases, the obstacle which had theretofore existed in the case of geographical names, but marks of that class did not by registration acquire the status of a technical trade-mark and carry full and exclusive rights with them. They still depended for their validity and scope upon the secondary meaning doctrine, although, in some particulars, these rights were somewhat broadened.Speaking of such marks, the court said: "Their exclusive use as trademarks for the stated period was deemed, in the judgment of Congress, a sufficient assurance that they has acquired as secondary meaning as the designation of the origin or ownership of the merchandise to which they were affixed. And it was manifestly in this limited character only that they received statutory recognition, and, on registration, became entitled to protection under the act." Amplifying, the court pointed out that geographical names though registered did not carry a monopoly or exclusive right. For example, they might be still used by persons whose goods actually were made at the place which was the origin of the name. So, in the present case, it seems clear that the plaintiff would not be entitled to restrain the use of the word as applied to lotions manufactured in Italy or, possibly, of Italian ingredients or by Italian methods.

On the other hand, the court said: "This is not to say that, in this view, the case becomes one simply of unfair competition * * * for, * * * still the right to be protected against an unwarranted use of the registered mark has been made a statutory right, and the courts of the United States have been vested with jurisdiction of suits for infringement, regardless of diversity of citizenship." In other words, there may be unwarranted uses of this type of trade-mark or trade-name which do not involve any unfair competition, fraud on the public, or palming off, which will be restrained simply because of the plaintiff's superior right. Such a use I conceive to be that made by the defendant in the instant case; that is, a use by a person whose product is in no way connected with the place which is the origin of the trade-mark.

This conclusion does not appear to be in conflict with the opinion of the Circuit Court of Appeals for the Third Circuit in Apollo Brothers, Inc., v. Perkins, 207 F. 530. That case did not involve a registered mark under the ten-year clause, and the rights acquired by such registration were not considered. All it holds is that in an ordinary secondary meaning case, unfair competition must be shown. In the Davids Case there was little if any similarity in dress beyond the use of the name itself in the same position on the labels as the plaintiff's. This the court held "constituted a 'colorable imitation' within the meaning of the act." At all events, the Davids Case was decided after the Apollo Brothers Case. Whether the Supreme Court would have held that, in order to restrain infringement of an unregistered geographical secondary meaning mark, unfair competition would have to be shown need not be considered. What the Supreme Court did hold was registration under the act gave that margin of protection.

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